The Similarities and Differences of the Border Enforcement Measures
Enforces by the Customs of Both Sides of the Straits

Yu-Li Tsai, Patent Attorney

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Bachelor of EE from National Taiwan University

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Master from Telecommunications from National Taiwan University

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IP Master from New Hampshire Law School (Franklin Pierce)

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On the measures of
protecting intellectual property rights, the border enforcement measures
adopted by the customs can exclude the importation or exportation of
cargoes having likelihood of infringing intellectual property rights,
and are considerably important part of current awareness for both sides
of the straits. Regarding the border enforcement measures of patent
rights, the act of the custom of Taiwan is provisional injunction of
suspending the importation or exportation. However, the amendment bill
for Article 94-1 to 94-4 and Article 143 Patent Act examined and passed
by Legislative Yuan on January 3, 2014 added a system of the border
enforcement measures of ¡§applying for seizure¡¨ for protecting patent
rights, which should be a system able to further enhance the protection
of patent rights. The followings will brief the similarities and
differences of relevant systems of both sides of the straits on the
basis of the new Taiwan Patent Act.

The last patent act
amendments added ¡§applying for seizure¡¨ for the patent border
enforcement measures enforced by the customs of this country. According
to the newly added Article 97-1 of Patent Act, patentees can apply in
advance for seizing an imported article having likelihood of patent
infringement; patentee shall apply for the seizure in written, interpret
the facts of infringement, and provide deposit or guarantee amount to
duty-paid price of the article. The party seized of the imported
article, in contrast, can provide double deposit or comparable guarantee
to request the custom to rescind the seizure. The customs can allow the
two parties to inspect the seized article under the premise of not
damaging the confidential information protection of the seized article
so that the patentee and the party seized of the imported article can
evaluate the possibility of infringement.

The customs¡¦ seizure of
the imported article according to the patentee¡¦s application is of the
nature of provisional right protection, so the parties shall still seek
judicial proceedings to find whether the imported article infringes
patent right or not. Therefore, after applying for the seizure, the
patentee shall file an infringement action to prevent the article from
being retained at the customs overlong and causing unnecessary damages
to the importer. In this regard, when the patentee fails to file an
action within 12 days, the action is irrevocably rejected, the seized
article is held non-infringement through an irrevocable decision, the
applicant voluntarily revokes the seizure, or the party suffering the
seizure provides counter guarantee, the customs shall rescind the
seizure. If the reason of rescinding the seizure can be attributed to
the applicant, the applicant will bear the burden the expenses generated
from the seizure, such as storage charges, handling charges, etc. In
addition, if a patentee considers that an imported article has
likelihood of infringement and applies for seizure, but later on, the a
court¡¦s irrevocable decision found non-infringement, then the patentee
will bear the burden of compensating the party suffering from the
seizure the damaged generated from the seizure so as to prevent the
patentee from imprudently applying for a seizure proceeding.

In contrast to this
country, Mainland China does not provide the patent border enforcement
measures in its patent act, but only follows its ¡§Regulations of the
Customs Protection of Intellectual Property Rights¡¨ (hereafter
¡§Protection Regulations¡¨). The applicable scope of the regulation
includes the trademark exclusive right, copyright and rights related to
the copyright, patent right; in other words, the customs protection
measures of intellectual property rights of Mainland China do not
differentiate the differences among different rights. In addition,
according to the Protection Regulations, China¡¦s customs adopt
protection by application and protection ex officio for the
patent border enforcement measures. The former one means that when a
patentee finds that an infringement-suspected cargo is about to be
imported or exported, s/he can apply for seizing the
infringement-suspected cargo toward the customs, and the customs will
enforce the seizure measures. The later one means that during the
monitoring process, the customs find that an importation or exportation
cargo is suspected to infringe a patent right which has been recorded in
General Administration of Custom, notify the patentee, and enforce the
seizure measures against the infringement-suspected cargo in accordance
with an application of the patentee.

After the comparisons
above, we can find that regarding the patent border enforcement
measures, after the amendment bill of the Patent Act of this country is
promulgated, this country can establish a system of ¡§seizure by
application¡¨, of which the contents is generally comparable to the
¡§protection by application¡¨ provided by the Protection Regulations of
Mainland China. However, in consideration that during the process of
custom operations, the staffs of the custom are not professional in
judging whether there is a likelihood of patent infringement for an
imported article, the amendment of Patent Act of this country does not
introduce the scheme of seizure ex officio, which becomes the
most apparent difference between the systems of both sides of the
straits.